The period since the UK's departure from the EU in 2021 has had a major impact on both trade mark registration numbers and the trade mark protection landscape in general. Here, we examine the challenges currently facing trade mark owners and offer guidance on updating registration and protection strategies.
This information was updated on 20 October 2023.
Each year the UKIPO publish facts and figures relating to the trade mark, patent and design filings of the previous calendar year. The 2022 figures have recently been released, and there are some intriguing patterns emerging. Overall, new application filings were down from record 2021 numbers but still significantly above the figures in 2020, while oppositions to trade mark applications grew significantly despite the drop in filings from 2021.
We discuss the key issues below with implications and advice for what brand owners should do with some data also received in the first two quarters of 2023 in our report here.
We previously reported that, in 2021, the size of the UK trade mark register more than doubled – read our article on the filing facts and figures. This presents several new challenges, including added difficulties in selecting and clearing new branding, policing rights and challenging new entrants on the register. Following Brexit, the UK register operates alongside but separately from the EU register. It is therefore important brand owners and their representatives understand differences in practice in protecting trade marks in the UK vs the EU which may affect filing strategies.
All change on 01 January 2024 - UKIPO representation changes
There are some key changes to representation and, by 1 January 2024, it will be mandatory for all non-UK entities to have a UK-based representative recorded on the UKIPO for taking actions in relation to their UK trade mark registrations. There is also a risk of loss of existing rights or opportunities to take action against conflicting marks should there be delays in receiving and acting upon UKIPO correspondence which set short deadlines for responding. Trade mark owners can avoid the last minute rush to appoint representation, manage their portfolios more effectively and also ensure they receive official UKIPO communications more promptly by appointing UK-based representatives now.
We have developed a helpful visual reference to illustrate this change here.
There is also a recently announced change to practice in the UK which concerns representation for trade mark owners using the Madrid Protocol system to designate the UK – find out more on this here. Again, there are good reasons to appoint UK-based representation now and please contact us on beyondbrexit@marks-clerk.com if you need any support with this.
Oppositions and disputes
While, in general, EU and UK IPO procedures are still similar, there are important differences, particularly in opposition proceedings, and this presents another challenge. Read about the key differences here. Choosing between forums, or coordinating oppositions on two fronts, is another area of complication that trade mark owners need to address – read our guidance on simultaneous oppositions.
As UK opposition proceedings are similar to litigation, they need to be well-managed by specialists – see our UK opposition guide. In contrast, EU trade mark oppositions are slightly more procedural, but still require expert management – see our guide to EU oppositions. As many oppositions end in a negotiated settlement, experience also counts – here we share some guidance notes on negotiation.
Portfolio management
Most trade mark owners now have multiple parallel UK and EU trade mark rights to manage. This usually requires a range of decisions to be made on an annual basis. These can become more manageable with the appropriate strategy and forward planning. We are happy to help with this; please contact us via beyondbrexit@marks-clerk.com if you would like further information.